When the Supreme Court declined to speak to software patenting in the Bilski case, there was wailing and gnashing of teeth in the open source software world. The new Bilski test for patentable subject matter looked at first like the status quo for software patentability. But, being the sort of person who tries to check clouds for a possible silver lining, I noted a possibility that courts and the Board of Patent Appeals and Interferences would read the test to invalidate some software patents. Later I noted that there were a number of early decisions finding software unpatentable.

That trend is continuing in a good direction. A new study of the first full year of decisions applying Bilski to software confirms that the direction of the case law is toward finding software is not patentable subject matter. The study by Robert Greene Sterne and Michelle K. Holoubek is titled The Practical Side of §101 : One year post-Bilski: How the decision is being interpreted by the BPAI, District Courts, and Federal Circuit. [PDF] It contains brief summaries of 182 decisions of the BPAI, 6 federal district court decisions, and 3 Federal Circuit decisions. The majority of the BPAI and district court decisions concern software. And many of those software decisions apply Bilski to find that the subject matter is too abstract to be patented.

Sterne and Holoubek found that before the BPAI, in the 182 cases involving challenges on the grounds of non-statutory subject matter, the decisions rejecting patentability outnumbered those finding statutory subject matter by 2.5 to 1. Of the four district court decisions addressing software, all found the patents non-statutory. None of the Federal Circuit decisions plainly addressed a pure software claim.

The market for software patents is hardly dead. Indeed, as shown by recent transactions, including the princely sum ($4.5 billion) bid for Nortel's portfolio by Microsoft, Apple, and others, it's acting very healthy. But it could be coming down with something serious. Stay tuned.

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7 Comments

All software programs are algorithms. This is a proven fact. The copyright law clearly states that algorithms can not be patented. All software patents are illegal. When are your courts going to recognize this fact?

All software programs are implementations of algorithmic approaches to a given problem. The problem is that patents tend to be on the algorithm, broadly conceived, and not properly conceived in fine-grained focus on the implementation.

Most software patents, in U.S. anyway, are broadly defined as process patents using an algorithms as a methodology. Algorithms are not generally patentable, but business processes are. Thus, the claims are substantiated based on the concept of owning a process.

Whatever the ultimate consensus of the courts in regard to the legitimacy of software patents, perhaps concerned parties should begin discussions on how to create a software patent that works for developers. For instance, instead of the usual costly, 20-year patent, maybe it's time for an inexpensive, limited, 5-year software patent that reflects software's low overhead and rapid obsolescence? Some other countries offer multi-tiered patent systems; I think it's time the U.S. started discussions in that area.

"A software patent that works for developers." Hmmm, you must not be a developer.

So my 5-year patent on a javascript routine that dials 911 from my computer (along with the 50 other identical patents) is somehow less of a simpleminded extortion??

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Rob Tiller is vice president and assistant general counsel for Red Hat, where he manages patent, trademark, and copyright matters. He is a frequent speaker and writer on open source legal issues. Before coming to Red Hat, he was a partner with the law firm of Helms, Mulliss & Wicker, PLLC, where he specialized in commercial and IP litigation. He is a graduate of the University of Virginia School of Law, and a former clerk for Justice Antonin Scalia of the U.S. Supreme Court, and Judge

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